Easily-accessible and fact-based reporting of interesting developments about new and pending Section 337 investigations, litigation trends, statistics, practical insights into the Administrative Law Judges, and commentary on important ITC decisions.

Further to our March 9, 2011 post, on June 3, 2011, the International Trade Commission issued the public version of its opinion reversing ALJ Carl C. Charneski’s August 5, 2010 Remand Initial Determination (“RID”) in Certain Connecting Devices (“Quick-Clamps”) for Use with Modular Compressed Air Conditioning Units, Including Filters, Regulators, and Lubricators (“FRL’s”) That Are Part of Larger Pneumatic Systems and the FRL Units They Connect (Inv. No. 337-TA-587). According to the opinion, the ITC terminated the investigation finding the asserted claims invalid as obvious. Please note that Oblon Spivak represents Respondents SMC Corporation and SMC Corporation of America (collectively, “SMC”) in this matter.

By way of background, the Complainant in this investigation is Norgren Inc. (“Norgren”). ALJ Charneski issued an initial determination on February 13, 2008 in which he found no violation of Section 337. Norgren petitioned for review, and the Commission rendered a final decision on April 14, 2008 adopting the ALJ’s initial determination. Norgren appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit.

On May 26, 2009, the Federal Circuit issued a decision that modified the Commission’s claim construction, reversed the Commission’s determination of non-infringement, vacated the Commission’s determination of nonobviousness, and remanded the case. The Federal Circuit’s remand order contained instructions with respect to asserted claims of U.S. Patent No. 5,372,392 (the ‘392 patent) “to evaluate obviousness in the first instance based upon the correct construction of the claim term ‘generally rectangular ported flange’ — i.e., a construction that does not require a flange having projections on all four sides.” See our May 28, 2009 post for more details. ALJ Charneski conducted a one-day evidentiary hearing on April 21, 2010. On August 5, 2010, ALJ Charneski issued the RID determining that none of the asserted claims of the ‘392 patent were invalid as obvious. See our August 13, 2010 and September 13, 2010 posts for more details. On October 7, 2010, the Commission determined to review the RID on the issue of obviousness and requested further briefing. See our October 11, 2010 post for more details.

The Commission’s June 3, 2011 Opinion (the “Opinion”) focused on two aspects of the RID, namely whether SMC’s prior art old-style connector is “generally rectangular,” as claimed by the ‘392 patent and whether it would have been obvious in 1993 to combine a hinge with a generally rectangular clamp.

Whether SMC’s Prior Art Old-Style Connector is Generally Rectangular

According to the Opinion, the RID determined that modifying the SMC old-style connector to add a pivotally mounted side would not result in a device that contains all limitations of the asserted claims of the ‘392 patent, because SMC’s prior art old-style connector would not to be “generally rectangular.” SMC and the Investigative Attorney (“OUII”) contended that Norgren’s expert in the original proceeding admitted that the only difference between the connector of the ‘392 patent and SMC’s old style connector is that the ‘392 patent’s connector includes a hinge so one side pivots. They further argued that ALJ Charneski’s original initial determination found SMC’s old style connector to be generally rectangular, and to hold otherwise would be inconsistent with the Federal Circuit’s decision that both SMC’s and Norgren’s FRLs have “generally rectangular flanges.” SMC and OUII argued that SMC’s old style connectors have the same generally rectangular structure as SMC’s newer connectors found by the Federal Circuit to infringe, and the asserted claims should have the same meaning for purposes of infringement and validity.

Norgren argued that under 19 C.F.R. §210.43(b)(1), the Commission should show deference when reviewing the RID, and at any rate, the RID was correct because SMC and OUII relied on a photograph of the old-style connector, rather than an exhibit, and SMC and OUII did not show the ALJ what part of the old SMC connector comprised the clamp. Norgren also argued that only the striders of the SMC old-style connector should be considered, and that these two structures are not four sided or rectangular.

The Commission determined, contrary to Norgren’s allegations, that its review of an initial determination is de novo, and it need not accept any of the ALJ’s findings, holding instead that its review is pursuant to 19 C.F.R. §210.45, rather than 19 C.F.R. §210.43(b)(1) as asserted by Norgren. The Commission then rejected the RID’s conclusion that the prior art clamp is not generally rectangular. The Commission held that the RID was inconsistent with the Federal Circuit’s specific findings that the intervening sloped sides of the SMC and Norgren FRLs were generally rectangular, and also found the RID inconsistent with the original ID, which cited Norgren’s expert witness admitting that the only difference between the prior art SMC connector and the connector claimed in the ‘392 patent is that one side of the clamp pivots. The Commission found no evidence in the record supported deviating from the original ID on this point, and on the contrary, found evidence in the remand proceeding strongly supported finding a generally rectangular configuration in SMC’s old-style connector. Specifically, SMC’s expert identified four sides of SMC’s old-style connector that correspond to the same features engaging the flange in SMC’s new-style connector, which the Federal Circuit found to be a “four-sided, generally rectangular clamp.” After examining the physical exhibits, the Commission determined as factually wrong Norgren’s argument that SMC’s old-style clamp is neither four sided nor generally rectangular. Moreover, the Commission determined Norgren’s contention that SMC’s old-style clamp consists only of two striders to be inconsistent with the Federal Circuit’s decision that SMC’s new style is infringing, since both the new and old styles perform tightening of the two retaining clips in the same manner. The Commission further determined that SMC’s new and old style connectors use “the front and back striders as well as the alignment details on the top and bottom of the connector to sealingly connect the FRL units to one another,” and cited to SMC’s expert testimony that the shape formed by the four parts of the “front and back striders and the alignment details on the top and bottom” is generally rectangular. The Commission additionally determined that all four sides of the old-style connector are needed for it to function properly, and Norgren’s arguments were inconsistent with its arguments that SMC’s new-style connector is both four-sided and generally rectangular.

Obviousness of Combining a Hinge with a Generally Rectangular Clamp

According to the Order, SMC and OUII argued that the RID is erroneous because it would have been obvious in 1993 to hinge the removable side of a connector to address the problem with prior art connectors, namely loose parts and ease of use. They pointed to, among other things, design needs, finite number of ways for solving the loose parts problem, and a prior art patent - the Palatchy patent - that specifically showed hinging a clamp for pipes to make it easier to manipulate. Norgren countered that SMC’s expert was not involved in the FRL industry in 1993, and that Norgren’s expert was so involved, and Norgren’s expert testified on the absence of any teaching, suggestion or motivation to achieve the subject matter of the ‘392 patent. Norgren also argued that a person of ordinary skill in the art would not have reasonably expected that a hinged side on a rectangular claim would provide a fluid-tight seal.

The Commission determined that SMC established, clearly and convincingly, the obviousness in 1993 of hingedly or pivotally mounting one side of a generally rectangular connector. The Commission also determined that the Palatchy patent demonstrated that at the time of the invention, it was known to one of skill in the art to use a pivotally mounted side to make the clamp easier to use and eliminate loose parts. Applying the flexible standard dictated by KSR, the Commission concluded there was no reason to limit the teaching of the Palatchy patent to water pipes. More fundamentally, it determined that the use of a hinge to solve the known loose parts problem in the FRL industry in 1993 was a common sense solution, apart from the disclosure of the Palatchy patent. The Commission further determined that the testimony of Norgren’s expert supported the common sense nature of the claimed solution, and that hinges were common components that one of ordinary skill would have understood to solve the loose parts problem. The Commission held as lacking merit Norgren’s contention that one of ordinary skill would not have expected the hinge to work on devices operating up to 300 PSI, and to pass tests six times the expected air pressure. The Commission determined that “the hinge does not affect the sealing or clamping mechanism; it merely connects the strider to the connector,” and that it cited to Norgren’s expert’s admission that if the prior art were modified to include a pivoting side and the clamp functioned the same way, there would be no need to test it to see if it sealed properly.

The Commission also concluded that secondary considerations do not support a finding of non-obviousness. The Commission rejected Norgren’s argument that all experts opined that there was a long-felt need for a clamp that allowed for ease of replacement and had no loose parts, determining instead that long felt need is created by inadequacies in technical knowledge, which was not the case here. The Commission further determined there was no persuasive showing of commercial success, particularly due to Norgren’s failure to demonstrate a nexus between any success and the improvements claimed in the ‘392 patent.

The Commission further determined that in addition to proving the obviousness of claim 1 of the ‘392 patent, SMC and OUII also proved the obviousness of asserted dependent claims 2-5, 7, and 9 of the ‘392 patent. The Commission determined that each of the elements of the dependent claims were shown in SMC’s old-style clamp, either alone or in view of the Palatchy patent and/or the general knowledge and common sense of one of skill in the art relating to hinges and hinged connections.

Accordingly, the Commission reversed the ALJ’s RID, and therefore found no violation of Section 337 and terminated the investigation.

Archives

More from Oblon

The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon et al., or its clients.